Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 93

MOTION to Strike All Affirmative Defenses in Defendant GoDaddy's Answer to Amended Complaint filed by Petroliam Nasional Berhad. Motion Hearing set for 8/3/2011 09:00 AM in Courtroom 3, 3rd Floor, Oakland before Hon. Phyllis J. Hamilton. Responses due by 7/12/2011. Replies due by 7/19/2011. (Attachments: # 1 Proposed Order [PROPOSED] ORDER)(Clark, Perry) (Filed on 6/28/2011)

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PERRY R. CLARK, State Bar No. 197101
Law Offices of Perry R. Clark
825 San Antonio Road
Palo Alto, CA 94303
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Attorney for Plaintiff
PETROLIAM NASIONAL BERHAD
(PETRONAS)

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

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PETROLIAM NASIONAL BERHAD
(PETRONAS),

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Plaintiff,

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vs.

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GODADDY.COM, INC.,

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Defendant.

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CASE NO.: 09-CV-5939 PJH
MOTION TO STRIKE
AFFIRMATIVE DEFENSES OF
GODADDY
Date: August 3, 2011
Time: 9:00 a.m.
Courtroom 3
Judge: Hon. Phyllis J. Hamilton

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MOTION TO STRIKE AFFIRMATIVE DEFENSES OF GODADDY
Case No: 09-CV-5939 PJH

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NOTICE OF MOTION
TO ALL PARTIES AND COUNSEL OF RCORD: Please take notice that pursuant to

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Fed. R. Civ. P. 12(f), Plaintiff Petroliam Nasional Berhad (“Plaintiff” or “Petronas”) hereby

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moves this Court to strike all of Defendant GoDaddy.com, Inc.’s affirmative defenses in its

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Answer to First Amended Complaint (Docket No. 89, attached hereto as Ex. A). Plaintiff further

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provides notice that pursuant to the Court’s practice, Plaintiff has selected August 3, 2011 at 9

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a.m. as the date the motion will be heard.

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Petronas filed a motion to strike the affirmative defenses in GoDaddy’s original Answer
on August 25, 2010 (Doc. No. 55, attached as Ex. B) which was stayed pending resolution of

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GoDaddy’s then-pending motion for judgment on the pleadings (Doc. No. 64, attached as Ex. C).

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That motion was rendered moot by the filing of Petronas’s First Amended Complaint. Because

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GoDaddy’s Answer to First Amended Complaint contains a virtually identical—and thus

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identically deficient—pleading of its affirmative defenses as those in its original Answer,

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Petronas is again filing a motion to strike.

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-2MOTION TO STRIKE AFFIRMATIVE DEFENSES OF GODADDY
Case No: 09-CV-5939 PJH

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MEMORANDUM IN SUPPORT
Petronas’s motion to strike should be granted because all of GoDaddy’s Affirmative

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Defenses are pled as a mere list of the common names of certain defenses and, as a result, fail to

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provide notice of their underlying factual or legal grounds, if any. (Ex A at 9-10 (Doc. No. 89

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(Answer to Amended Complaint) (reproduced below)).

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-3MOTION TO STRIKE AFFIRMATIVE DEFENSES OF GODADDY
Case No: 09-CV-5939 PJH

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Federal Rule of Civil Procedure 12(f) provides that a court may strike “from any pleading
any insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.”
Whether a pleading is procedurally sufficient so as to withstand a motion to strike is governed by
Fed. R. Civ. P. Rule 8(c) under which “the key to determining the sufficiency of the pleading of
an affirmative defense is whether it gives plaintiff fair notice of the defense.” Wyshak v. City
National Bank, 607 F.2d 824, 827 (9th Cir. 1979). “Bare statements reciting mere legal
conclusions do not provide a plaintiff with fair notice of the defense asserted, as required by
Wyshak” and Rule 8. CTF Dev., Inc. v. Penta Hospitality, LLC, 2009 U.S. Dist. LEXIS 99538
(N.D. Cal. Oct. 26, 2009) (striking affirmative defenses pled as “all or some of [plaintiff’s]
claims are barred under the doctrine of unclean hands” and “all or some of [plaintiff’s] claims are
barred because any marks claimed by [plaintiff], including its registration for PENTA (U.S. Reg.
No. 3,568,660), are invalid.”) A court may “strike defenses that do no more than name the
defenses without listing their elements or supporting facts.” Qarbon.com Inc. v. eHelp Corp.,
315 F. Supp. 2d 1046, 1049 (N.D. Cal. 2004) (striking affirmative defenses pled as “[plaintiff is]
barred from recovery in whole or in part by the doctrines of waiver, estoppel, and unclean

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-4MOTION TO STRIKE AFFIRMATIVE DEFENSES OF GODADDY
Case No: 09-CV-5939 PJH

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hands.”). “Where an affirmative defense simply states a legal conclusion or theory without the

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support of facts explaining how it connects to the instant case, it is insufficient and will not

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withstand a motion to strike.” Solis v. Zenith Capital, LLC, No. C-08-4854, 2009 U.S. Dist.

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LEXIS 43350, at *8-19 (N.D. Cal. May 8, 2009) (citing Jones v. Community Redevelopment

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Agency, 733 F.2d 646, 649 (9th Cir. 1984)). 1

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Here, GoDaddy’s amended answer simply lists the names of common affirmative

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defenses, such as “waiver,” “laches,” or “acquiescence” without providing any supporting facts.

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(Ex. A at 9-10). For others, GoDaddy merely identifies general legal concepts while providing

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no indication of the legal or factual basis for their application to the amended complaint or this

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case, such as the “failure of Petronas to mitigate damages” or “the Lanham Act safe harbor for

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registrars.” (Id.) GoDaddy also states, with no specificity at all, that the complaint “fails to state

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claim upon which relief can be granted” but provides no information of any kind as to why this

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might be true, especially in light of the denial of its second motion to dismiss (see Ex. D (Doc.

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No 87, “Order Denying Motion to Dismiss”)).

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Because the affirmative defenses in GoDaddy’s Answer to First Amended Complaint fail

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to meet the pleading standard set forth in Rule 8, they should be stricken pursuant Rule 12(f).

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Dated: June 28, 2011

LAW OFFICES OF PERRY R. CLARK

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By:

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/s/ Perry R. Clark
Perry R. Clark
Attorney for Plaintiff
PETROLIAM NASIONAL BERHAD

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This motion is not based on a contention that Defendant’s affirmative defenses seek damages
that are “precluded as a matter law” and, thus, does not implicate the Ninth Circuit’s holding in
Whittlestone, Inc. v. Handi-Craft Co., 618 F.3d 970, 971 (9th Cir. 2010), that, “[i]n this case of
first impression, we hold that Rule 12(f) of the Federal Rules of Civil Procedure does not
authorize a district court to strike a claim for damages on the ground that such damages are
precluded as a matter of law.”

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-5MOTION TO STRIKE AFFIRMATIVE DEFENSES OF GODADDY
Case No: 09-CV-5939 PJH

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Ex. A

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-6MOTION TO STRIKE AFFIRMATIVE DEFENSES OF GODADDY
Case No: 09-CV-5939 PJH

Case4:09-cv-05939-PJH Document89

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JOHN L. SLAFSKY, State Bar No. 195513
DAVID H. KRAMER, State Bar No. 168452
HOLLIS BETH HIRE, State Bar No. 203651
WILSON SONSINI GOODRICH & ROSATI
Professional Corporation
650 Page Mill Road
Palo Alto, CA 94304-1050
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant
GoDaddy.com, Inc.
UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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PETROLIAM NASIONAL BERHAD,
Plaintiff,

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vs.

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GODADDY.COM, INC.,

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Defendant.

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Filed05/19/11 Page1 of 11

CASE NO: 09-CV-5939 PJH

ANSWER TO FIRST AMENDED
COMPLAINT
DEMAND FOR JURY TRIAL

Defendant GoDaddy.com, Inc. (“Go Daddy”), by and through its attorneys, hereby

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answers the First Amended Complaint (“Complaint”) of Plaintiff Petroliam Nasional Berhad

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(“Petronas”) as follows:

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THE PARTIES
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in paragraph 1 of the Complaint and on that basis denies them.
2.

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Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

Go Daddy admits the allegations as set forth in paragraph 2 of the Complaint.
JURISDICTION AND VENUE

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Go Daddy admits that this action purportedly arises under the Lanham Act and that

the Court has subject matter jurisdiction over the claims asserted in the Complaint. Go Daddy
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lacks sufficient knowledge to admit or deny the remaining allegations set forth in paragraph 3 of

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the Complaint and on that basis denies them.

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4.

Go Daddy denies the allegations as set forth in paragraph 4 of the Complaint.

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Go Daddy denies the allegations as set forth in paragraph 5 of the Complaint.

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INTRADISTRICT ASSIGNMENT
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Go Daddy admits the allegations as set forth in paragraph 6 of the Complaint.

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FACTUAL ALLEGATIONS
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Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 7 of the Complaint and on that basis denies them.
8.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 8 of the Complaint and on that basis denies them.
9.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 9 of the Complaint and on that basis denies them.
10.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 10 of the Complaint and on that basis denies them.
11.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 11 of the Complaint and on that basis denies them.
12.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 12 of the Complaint and on that basis denies them.
13.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 13 of the Complaint and on that basis denies them.
14.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 14 of the Complaint and on that basis denies them.
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Go Daddy admits that according to the official website for the Internet Corporation

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for Assigned Names and Numbers (ICANN), ICANN is responsible for managing and

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coordinating the Domain Name System. Go Daddy denies the remaining allegations set forth in

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paragraph 15 of the Complaint.

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Go Daddy admits that Verisign is the registry operator for “.com” and “.net”

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domain names. Go Daddy denies the remaining allegations set forth in paragraph 16 of the

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Complaint. The “Registry Agreement” speaks for itself.

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Go Daddy admits that Verisign maintains a database of registered”.net” domain

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names and any Internet Protocol addresses provided for issued “.net” domain names. Go Daddy

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denies the remaining allegations set forth in paragraph 17 of the Complaint.

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Go Daddy admits that Verisign receives information about domain name

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registrations from registrars, and that registrars enter into registration accreditation agreements

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with ICANN. Go Daddy denies the remaining allegations set forth in paragraph 18 of the

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Complaint. The agreements speak for themselves.
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Go Daddy admits that it has entered into a registrar accreditation agreement with

ICANN. Go Daddy denies the remaining allegations set forth in paragraph 19 of the Complaint.
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Go Daddy admits that it has entered into a registrar accreditation agreement with

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ICANN. Go Daddy denies the remaining allegations set forth in paragraph 20 of the Complaint.

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The agreement speaks for itself.

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21.

Go Daddy admits that it has entered into a registrar accreditation agreement with

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ICANN. Go Daddy denies the remaining allegations set forth in paragraph 21 of the Complaint.

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The agreement speaks for itself.

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Go Daddy admits that it has entered into a registrar accreditation agreement with

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ICANN. Go Daddy denies the remaining allegations set forth in paragraph 22 of the Complaint.

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The agreement speaks for itself.

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Go Daddy admits that it has entered into a registrar accreditation agreement with

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ICANN. Go Daddy denies the remaining allegations set forth in paragraph 23 of the Complaint.

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The agreement speaks for itself.

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Go Daddy admits that it has entered into a registrar accreditation agreement with

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ICANN. Go Daddy denies the remaining allegations set forth in paragraph 24 of the Complaint.

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The agreement speaks for itself.

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Go Daddy admits that it has entered into a registrar accreditation agreement with

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ICANN. Go Daddy denies the remaining allegations set forth in paragraph 25 of the Complaint.

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The agreement speaks for itself.

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Go Daddy admits that it has entered into a registrar accreditation agreement with

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ICANN. Go Daddy denies the remaining allegations set forth in paragraph 26 of the Complaint.

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The agreement speaks for itself.

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Go Daddy denies the allegations set forth in paragraph 27 of the Complaint.

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Go Daddy admits that it offers a domain name hosting service. Go Daddy denies

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the remaining allegations set forth in paragraph 28 of the Complaint.
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Go Daddy admits that it offers a domain name forwarding service. Go Daddy

denies the remaining allegations set forth in paragraph 29 of the Complaint.

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30.

Go Daddy denies the allegations set forth in paragraph 30 of the Complaint.

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Go Daddy admits the allegations set forth in paragraph 31 of the Complaint.

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Go Daddy admits that it entered into a domain name registration agreement with

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the registrant of the <petronastower.net> and <petronastowers.net> domain names. Go Daddy

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denies the remaining allegations set forth in paragraph 32 of the Complaint.

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Go Daddy admits that ICANN has a registrar transfer dispute resolution policy. Go

Daddy denies the remaining allegations set forth in paragraph 33 of the Complaint.
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Go Daddy admits that it has a trademark and/or copyright infringement policy. Go

Daddy denies the remaining allegations set forth in paragraph 34 of the Complaint.
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Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 35 of the Complaint and on that basis denies them.
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Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 36 of the Complaint and on that basis denies them.
37.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 37 of the Complaint and on that basis denies them.
38.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 38 of the Complaint and on that basis denies them.
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Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 39 of the Complaint and on that basis denies them.
40.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 40 of the Complaint and on that basis denies them.
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Go Daddy admits that it was contacted on November 26, 2009 concerning the

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domain name <petronastower.net>. Go Daddy denies the remaining allegations set forth in

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paragraph 41 of the Complaint.

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42.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 42 of the Complaint and on that basis denies them.

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43.

Go Daddy admits the allegations set forth in paragraph 43 of the Complaint.

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44.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

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in paragraph 44 of the Complaint and on that basis denies them.
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Go Daddy admits that it was contacted on November 26, 2009 concerning the

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domain name <petronastower.net>. Go Daddy denies the remaining allegations set forth in

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paragraph 45 of the Complaint.

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46.

Go Daddy admits that it sent an e-mail message concerning the domain name

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<petronastower.net> on or about December 1, 2009. Go Daddy denies the remaining allegations

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set forth in paragraph 46 of the Complaint.

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47.

Go Daddy admits that it was contacted on December 14, 2009 concerning the

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domain name <petronastower.net>. Go Daddy denies the remaining allegations set forth in

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paragraph 47 of the Complaint.

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48.

Go Daddy admits that it was contacted concerning the domain name

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<petronastower.net> on December 16, 2009. Go Daddy denies the remaining allegations set forth

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in paragraph 48 of the Complaint.

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49.

Go Daddy admits that on December 16, 2009 it sent an e-mail message concerning

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the domain name <petronastower.net>. Go Daddy denies the remaining allegations set forth in

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paragraph 49 of the Complaint.

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Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 50 of the Complaint and on that basis denies them.
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Go Daddy admits that plaintiff requested a temporary restraining order of

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December 18, 2009, and that the request was denied on December 23, 2009. Go Daddy denies the

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remaining allegations set forth in paragraph 51 of the Complaint.

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52.

Go Daddy admits that plaintiff filed an in rem action against the domain name

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<petronastower.net> on January 29, 2010, and that the in rem action resulted in an order

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transferring the domain name <petronastowner.net> to plaintiff on May 13, 2010. Go Daddy

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denies the remaining allegations set forth in paragraph 52 of the Complaint.

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53.

Go Daddy admits that it was the registrar of the domain name

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<petronastowers.net>. Go Daddy denies the remaining allegations set forth in paragraph 53 of the

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Complaint.

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54.

Go Daddy admits that it was contacted on July 7, 2010 concerning the domain

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name <petronastowers.net>. Go Daddy admits that it sent an e-mail message concerning the

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domain name <petronastowers.net> on July 8, 2010. Go Daddy denies the remaining allegations

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set forth in paragraph 54 of the Complaint.

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55.

Go Daddy admits that plaintiff filed an in rem action against the domain name

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<petronastowers.net> on July 12, 2010, and that the in rem action resulted in an order transferring

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the domain name <petronastowers.net> to plaintiff on August 27, 2010. Go Daddy denies the

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remaining allegations set forth in paragraph 55 of the Complaint.

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56.

Go Daddy admits the allegations set forth in paragraph 56 of the Complaint.

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57.

Go Daddy denies the allegations set forth in paragraph 57 of the Complaint.

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58.

Go Daddy denies the allegations set forth in paragraph 58 of the Complaint.

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COUNT ONE

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Cybersquatting Under 15 U.S.C. §1125(d)

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59.

Go Daddy incorporates by reference its responses to paragraphs 1 through 58,

inclusive, as if fully set forth herein.

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Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 60 of the Complaint and on that basis denies them.
61.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 61 of the Complaint and on that basis denies them.
62.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 62 of the Complaint and on that basis denies them.

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63.

Go Daddy denies the allegations as set forth in paragraph 63 of the Complaint.

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64.

Go Daddy denies the allegations as set forth in paragraph 64 of the Complaint.

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65.

Go Daddy denies the allegations as set forth in paragraph 65 of the Complaint.

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66.

Go Daddy denies the allegations as set forth in paragraph 66 of the Complaint

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67.

Go Daddy denies the allegations as set forth in paragraph 67 of the Complaint.

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68.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

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in paragraph 68 of the Complaint and on that basis denies them.
69.

Go Daddy admits that it does not charge a fee for its domain name forwarding

service. Go Daddy denies the remaining allegations set forth in paragraph 69 of the Complaint.
70.

Go Daddy admits that it charges registrants in general, and the registrant of the

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<petronastower.net> and <petronastowers.net> domain names in particular, a standard registration

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fee that does not relate in any way to any trademark rights of plaintiff or anyone else. Go Daddy

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denies the remaining allegations set forth in paragraph 70 of the Complaint.

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71.

Go Daddy admits that every year hundreds of proceedings under the Uniform

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Domain Name Dispute Resolution Policy have been filed concerning the domain names that are

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registered with Go Daddy. Go Daddy denies the remaining allegations set forth in paragraph 71.

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72.

Go Daddy denies the allegations set forth in paragraph 72 of the Complaint.

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73.

Go Daddy denies the allegations set forth in paragraph 73 of the Complaint.

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74.

Go Daddy denies the allegations set forth in paragraph 74 of the Complaint.

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75.

Go Daddy denies the allegations set forth in paragraph 75 of the Complaint.

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76.

Go Daddy denies the allegations set forth in paragraph 76 of the Complaint.

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COUNT TWO

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Contributory Liability for Cybersquatting

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Go Daddy incorporates by reference its responses to paragraphs 1 through 76,

inclusive, as through fully set forth herein.
78.

Go Daddy lacks sufficient knowledge to admit or deny the allegations as set forth

in paragraph 78 of the Complaint and on that basis denies them.

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79.

Go Daddy denies the allegations set forth in paragraph 79 of the Complaint.

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80.

Go Daddy denies the allegations set forth in paragraph 80 of the Complaint.

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81.

Go Daddy denies the allegations set forth in paragraph 81 of the Complaint.

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82.

Go Daddy denies the allegations set forth in paragraph 82 of the Complaint.

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83.

Go Daddy denies the allegations set forth in paragraph 83 of the Complaint.

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84.

Go Daddy denies the allegations set forth in paragraph 84 of the Complaint.

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85.

Go Daddy denies the allegations set forth in paragraph 85 of the Complaint.

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86.

Go Daddy denies the allegations set forth in paragraph 86 of the Complaint.

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87.

Go Daddy denies the allegations set forth in paragraph 87 of the Complaint.

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88.

Go Daddy denies the allegations set forth in paragraph 88 of the Complaint.

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89.

Go Daddy denies the allegations set forth in paragraph 89 of the Complaint.

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90.

Go Daddy denies the allegations set forth in paragraph 90 of the Complaint.

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91.

Go Daddy denies the allegations set forth in paragraph 91 of the Complaint.

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92.

Go Daddy denies the allegations set forth in paragraph 92 of the Complaint.

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93.

Go Daddy admits that it does not claim ownership of the PETRONAS trademark.

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Go Daddy denies the remaining allegations set forth in paragraph 93 of the Complaint.
94.

Go Daddy admits that its legal name is not incorporated in the <petronastower.net>

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or <petronastowers.net> domain names. Go Daddy denies the remaining allegations set forth in

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paragraph 94 of the Complaint.

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95.

Go Daddy denies the allegations set forth in paragraph 95 of the Complaint.

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96.

Go Daddy denies the allegations set forth in paragraph 96 of the Complaint.

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COUNT THREE

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Unfair Competition under California Bus. & Prof. Code § 17200

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and California Common Law

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97.

Go Daddy incorporates by reference its responses to paragraphs 1 through 96,

inclusive, as though fully set forth herein.

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98.

Go Daddy denies the allegations set forth in paragraph 98 of the Complaint.

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99.

Go Daddy denies the allegations set forth in paragraph 99 of the Complaint.

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100.

Go Daddy denies the allegations set forth in paragraph 100 of the Complaint.

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101.

Go Daddy denies the allegations set forth in paragraph 101 of the Complaint.

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AFFIRMATIVE AND OTHER DEFENSES

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Go Daddy alleges the following affirmative and other defenses, reserving the right to

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modify, amend, and/or expand upon these defenses as discovery proceeds.

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FIRST AFFIRMATIVE DEFENSE

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102.

The Complaint, and each claim asserted within it, fails to state a claim upon which

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relief can be granted.

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SECOND AFFIRMATION DEFENSE
103.

The Complaint is barred, in whole or in part, by the Lanham Act safe harbor for

domain name registrars. 15 U.S.C. §1114.

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THIRD AFFIRMATIVE DEFENSE

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104.

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estoppel and laches.

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FOURTH AFFIRMATIVE DEFENSE
105.

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The Complaint is barred, in whole or in part, by the doctrine of acquiescence.
FIFTH AFFIRMATIVE DEFENSE

106.

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The Complaint is barred, in whole or in part, by the equitable doctrines of waiver,

The Complaint is barred, in whole or in part, by the statute of limitations.
SIXTH AFFIRMATIVE DEFENSE

107.

The Complaint is barred, in whole or in part, by the defense of misrepresentation of

material facts.
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SEVENTH AFFIRMATIVE DEFENSE
108.

Plaintiff’s alleged trademark and alleged trademark registration are invalid, and

therefore cannot support plaintiff’s claims.

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EIGHTH AFFIRMATIVE DEFENSE
109.

Plaintiff lacks standing to bring these claims.

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NINTH AFFIRMATIVE DEFENSE
110.

The Complaint is barred, in whole or in part, by the failure of Petronas to mitigate

damages, if any.

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TENTH AFFIRMATIVE DEFENSE
111.

The Complaint is barred, in whole or in part, by the failure of Petronas to join an

indispensable party as defendant in this action.

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PRAYER FOR RELIEF
WHEREFORE, Go Daddy prays for judgment in its favor as follows:

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Filed05/19/11 Page10 of 11

a.

That the Court deny the Complaint in its entirety, with prejudice, and

specifically deny each and every prayer for relief contained therein;

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b.

That the Court award Go Daddy its reasonable costs, disbursements, and

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attorneys’ fees incurred in this action, to the extent permitted by law, including but not limited to

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15 U.S.C. § 1117, 28 U.S.C. § 1927, and Fed. R. Civ. P. 11; and

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c.

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and equitable.

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That the Court grant such other and further relief as the Court deems just

Dated: May 19, 2011

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WILSON SONSINI GOODRICH & ROSATI
Professional Corporation

By:

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/s/ John L. Slafsky

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John L. Slafsky
David E. Kramer
Hollis Beth Hire

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Attorneys for Defendant
GoDaddy.com, Inc.

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-10ANSWER TO FIRST AMENDED COMPLAINT
Case No: 09-CV-5939 PJH

3885390_1.

Case4:09-cv-05939-PJH Document89

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Filed05/19/11 Page11 of 11

DEMAND FOR JURY TRIAL
Defendant Go Daddy hereby demands a trial by jury of this action pursuant to Federal Rule
of Civil Procedure 38 and Civil L.R. 3-6.

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Dated: May 19, 2011

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WILSON SONSINI GOODRICH & ROSATI
Professional Corporation

By:

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/s/ John L. Slafsky
John L. Slafsky
David E. Kramer
Hollis Beth Hire

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Attorneys for Defendant
GoDaddy.com, Inc.

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3885390_1.

DEMAND FOR JURY TRIAL
Case No: 09-CV-5939 PJH

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Ex. B

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-7MOTION TO STRIKE AFFIRMATIVE DEFENSES OF GODADDY
Case No: 09-CV-5939 PJH

Ý¿-»ìæðçó½ªóðëçíçóÐÖØ Ü±½«³»²¬ëë

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Ú·´»¼ðèñîëñïð п¹»ï ±º ì

PERRY R. CLARK, State Bar No. 197101
Law Offices of Perry R. Clark
3457 Cowper St.
Palo Alto, CA 94306
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Attorney for Plaintiff
PETROLIAM NASIONAL BERHAD
(PETRONAS)

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA

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PETROLIAM NASIONAL BERHAD,

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Plaintiff,

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vs.

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GODADDY.COM, INC.,

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Defendant.

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CASE NO.: 09-CV-5939 PJH
MOTION TO STRIKE
AFFIRMATIVE DEFENSES OF
GODADDY
Date: September 29, 2010
Time: 9:00 a.m.
Courtroom 3
Judge: Hon. Phyllis J. Hamilton

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MOTION TO STRIKE AFFIRMATIVE DEFENSES OF GODADDY
Case No: 09-CV-5939 PJH

Ý¿-»ìæðçó½ªóðëçíçóÐÖØ Ü±½«³»²¬ëë

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Ú·´»¼ðèñîëñïð п¹»î ±º ì

NOTICE OF MOTION
TO ALL PARTIES AND COUNSEL OF RCORD: Please take notice that pursuant to

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Fed. R. Civ. P. 12(f), Plaintiff Petroliam Nasional Berhad (“Plaintiff” or “Petronas”) hereby

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moves this Court to strike all of Defendant GoDaddy.com, Inc.’s affirmative defenses in its

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complaint (Docket No. 27, attached hereto as Ex. A for convenience). Plaintiff further provides

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notice that pursuant to the Court’s practice, Plaintiff has selected September 29, 2010 at 9 a.m. as

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the date the motion will be heard.

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MEMORANDUM IN SUPPORT

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Plaintiff’s motion to strike should be granted because all of GoDaddy’s Affirmative

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Defenses are pled as a mere list of the common names for certain defenses and fail to provide

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notice of the factual or legal grounds, if any, for the defenses.

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Federal Rule of Civil Procedure 12(f) provides that a court may strike “from any pleading

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any insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.”

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Whether a pleading is procedurally sufficient so as to withstand a motion to strike is governed by

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Fed. R. Civ. P. Rule 8(c), under which “the key to determining the sufficiency of pleading an

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affirmative defense is whether it gives plaintiff fair notice of the defense.” Wyshak v. City

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National Bank, 607 F.2d 824, 827 (9th Cir. 1979). “Bare statements reciting mere legal

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conclusions do not provide a plaintiff with fair notice of the defense asserted, as required by

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Wyshak” and Rule 8. CTF Dev., Inc. v. Penta Hospitality, LLC, 2009 U.S. Dist. LEXIS 99538

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(N.D. Cal. Oct. 26, 2009) (striking affirmative defenses pled as “all or some of [plaintiff’s]

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claims are barred under the doctrine of unclean hands” and “all or some of [plaintiff’s] claims are

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barred because any marks claimed by [plaintiff], including its registration for PENTA (U.S. Reg.

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No. 3,568,660), are invalid.”) A court may “strike defenses that do no more than name the

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defenses without listing their elements or supporting facts.” Qarbon.com Inc. v. eHelp Corp.,

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-2MOTION TO STRIKE CERTAIN AFFIRMATIVE DEFENSES OF GODADDY
Case No: 09-CV-5939 PJH

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315 F. Supp. 2d 1046, 1049 (N.D. Cal. 2004) (striking affirmative defenses and stating plaintiff

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is “barred from recovery in whole or in part by the doctrines of waiver, estoppel, and unclean

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hands.”). “Where an affirmative defense simply states a legal conclusion or theory without the

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support of facts explaining how it connects to the instant case, it is insufficient and will not

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withstand a motion to strike.” Solis v. Zenith Capital, LLC, No. C-08-4854, 2009 U.S. Dist.

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LEXIS 43350, at *8-19 (N.D. Cal. May 8, 2009) (citing Jones v. Community Redevelopment

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Agency, 733 F.2d 646, 649 (9th Cir. 1984)).

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Here, defendant’s complaint simply lists defenses, such as “waiver,” “laches,” or

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“acquiescence” without providing any supporting facts. Ex. A (Compl. at 8:8-28). For others,

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GoDaddy identifies general legal concepts but provides no indication of the legal or factual basis

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for their application to the complaint or this case, such as the “failure of Petronas to mitigate

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damages” or “the Lanham Act safe harbor for registrars.” Id. GoDaddy also states, with no

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specificity at all, that the complaint “fails to state claim upon which relief can be granted” but

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provides not information of any kind as why this might be true.

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Because the affirmative defenses in GoDaddy’s answer fail to meet the pleading standard

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set forth in Rule 8, they should be stricken pursuant Rule 12(f).

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Dated: August 25, 2010

LAW OFFICES OF PERRY R. CLARK

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By:

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/s/ Perry R. Clark
Perry R. Clark
Attorney for Plaintiff
PETROLIAM NASIONAL BERHAD

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-3MOTION TO STRIKE CERTAIN AFFIRMATIVE DEFENSES OF GODADDY
Case No: 09-CV-5939 PJH

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Ex. C

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-8MOTION TO STRIKE AFFIRMATIVE DEFENSES OF GODADDY
Case No: 09-CV-5939 PJH

Ý¿-»ìæðçó½ªóðëçíçóÐÖØ Ü±½«³»²¬êì

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Ú·´»¼ðçñðèñïð п¹»ï ±º î

JOHN L. SLAFSKY, State Bar No. 195513
DAVID H. KRAMER, State Bar No. 168452
HOLLIS BETH HIRE, State Bar No. 203651
WILSON SONSINI GOODRICH & ROSATI
Professional Corporation
650 Page Mill Road
Palo Alto, CA 94304-1050
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]

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Attorneys for Defendant
GoDaddy.com, Inc.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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Petroliam Nasional Berhad,

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Plaintiff,
vs.

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GoDaddy.com, Inc.,
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Defendant.

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CASE NO.: 09-CV-5939 PJH
[PROPOSED] ORDER GRANTING
DEFENDANT’S MOTION PURSUANT
TO LOCAL RULE 6-3 TO POSTPONE
HEARING ON PLAINTIFF’S
MOTION TO STRIKE CERTAIN
AFFIRMATIVE DEFENSES
JUDGE: Hon. Phyllis J. Hamilton

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Upon Defendant GoDaddy.com, Inc.’s Motion Pursuant to Local Rule 6-3 to Postpone
Hearing on Plaintiff’s Motion to Strike Certain Affirmative Defenses, and in consideration of

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Plaintiff’s Opposition and the supporting declarations and exhibits filed in connection with the
briefing on this Motion, and good cause appearing therefore;

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IT IS HEREBY ORDERED THAT:

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Defendant GoDaddy.com, Inc.’s Motion Pursuant to Local Rule 6-3 to Postpone Hearing

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on Plaintiff’s Motion to Strike Certain Affirmative Defenses is GRANTED. The hearing date for

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Plaintiff’s Motion to Strike Certain Affirmative Defenses, filed August 25, 2010, shall be

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[PROPOSED] ORDER GRANTING
DEFENDANT’S MOTION TO POSTPONE
HEARING ON PLAINTIFF’S MOTION TO
STRIKE CERTAIN AFFIRMATIVE DEFENSES
Case No: 09-CV-5939 PJH

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Ú·´»¼ðçñðèñïð п¹»î ±º î

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postponed to this Court’s first available hearing date at least 5 weeks following a decision on the

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pending Motion for Judgment on the Pleadings and for an Order Finding Plaintiff Liable for

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Attorneys’ Fees. Pursuant to Local Rule 7-3, Defendant shall file an opposition to the Motion to

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Strike not less than 21 days before the revised hearing date, and Plaintiff shall file a reply not less

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than 14 days before the revised hearing date. ̸» °¿®¬·»- ¿®» ¼·®»½¬»¼ ¬± ¬¸» Ò·²¬¸ Ý·®½«·¬ù- ®»½»²¬
¼»½·-·±² ·² ɸ·¬¬´»-¬±²» ªò Ø¿²¼·óÝ®¿º¬ ݱòô îðïð ÉÔ íîîîìïé ø笸 Ý·®òô ß«¹ò ïéô îðïð÷ò

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çñéñïð
Dated: _________________

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__________________________________
The Hon. Phyllis J. Hamilton
United States District Judge

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-2[PROPOSED] ORDER GRANTING
DEFENDANT’S MOTION TO POSTPONE
HEARING ON PLAINTIFF’S MOTION TO
STRIKE CERTAIN AFFIRMATIVE DEFENSES
Case No: 09-CV-5939 PJH

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Ex. D

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-9MOTION TO STRIKE AFFIRMATIVE DEFENSES OF GODADDY
Case No: 09-CV-5939 PJH

Case4:09-cv-05939-PJH Document87

Filed05/05/11 Page1 of 2

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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PETROLIAM NASIONAL BERHAD,

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For the Northern District of California

United States District Court

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Plaintiff,

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v.

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ORDER DENYING MOTION TO DISMISS

GODADDY.COM, INC.,

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No. C 09-5939 PJH

Defendant.
_______________________________/

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The motion of defendant GoDaddy.com, Inc. (“GoDaddy”) for an order dismissing

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the first amended complaint for failure to state a claim came on for hearing before this court

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on May 4, 2011. Plaintiff Petroliam Nasional Berhad (“Petronas”) appeared by its counsel

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Perry R. Clark, and GoDaddy appeared by its counsel John L. Slafsky and Hollis Beth Hire.

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Having read the parties’ papers and carefully considered their arguments, and good cause

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appearing, the court hereby DENIES the motion.

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The court is unable to resolve a number of the issues raised in the present motion in

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the absence of a developed record. Among other things, the court requires a record

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clarifying the mechanics of what GoDaddy did or does with regard to the disputed domain

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names, and what “forwarding” and “routing” are and whether either or both can be

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considered part of domain name registration services generally or the services offered by

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GoDaddy. In addition, while the court has certain reservations concerning the adequacy of

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the pleading, it has concluded that dismissing the first amended complaint with leave to

Case4:09-cv-05939-PJH Document87

Filed05/05/11 Page2 of 2

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amend, and then toiling through yet another round of briefing on motions to dismiss, would

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not be productive.

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The court will conduct a case management conference on Thursday, May 26, 2011,
at 2:00 p.m.

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IT IS SO ORDERED.

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Dated: May 5, 2011
______________________________
PHYLLIS J. HAMILTON
United States District Judge

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For the Northern District of California

United States District Court

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